Trademarks as a Living Organism - ASIPI May 24, 2021 Stacey C. Kalamaras, Esq.
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Trademarks as a
Living Organism
ASIPI May 24, 2021
Stacey C. Kalamaras, Esq.
Who Am I?
• Founder and managing partner of Kalamaras Law Office LLC in
Chicago, IL
• Seasoned trademark, copyright, and advertising Attorney
• Big law and in-house experience
• Prior marketing and advertising experience working for consumer-
packaged goods companies
• Managed global trademark portfolios in 150+ countries
• Educated nearly 3,000 attorneys on trademark and IP since 2018
• Founder of Trademarkabilities, a trademark academy for lawyers
AGENDA
Why Companies Change Their Names
How IP/Trademark Factors into Branding
Brands Changing Due to the Social/Racial Justice Reforms
Rebranding Considerations in LatAm
In Summary
Q&A
Why Companies Change Names
Why Companies Change Names
1 Merger or Acquisition 4 Geographic Expansion
2 Trademark Infringement Action 5 Business Spin-off
3 Current name outdated or out of 6 Cultural/Translation Issues
the company’s scope
7 Negative Impression
Why Companies Change Names
1 Merger or Acquisition
o BB&T Corp. and SunTrust banks merged and chose the name TRUIST
o Led to big lawsuit with TRULIANT regional bank in NC, SC, and VA
o Resulted in settlement, but I expect there will be lots of confusion
o One of the reasons the merged BB&T/SunTrust entity gave for not changing
their name, once they realized there was a problem, was the fact that they
had spent $125M to date and the regulatory hurdles
Why Companies Change Names
2 Trademark Infringement Action
o Many examples, from threatened action to litigated
• You can often negotiate a transition period
o IMPOSSIBLE Burger v. INCREDIBLE Burger
• Nestle changed its name in the US to AWESOME Burger, but recently lost the rights in
the EU and announced it will change its name to SENSATIONAL Burger. It plans to
appeal the EU decision
o World Wildlife Fund (WWF) v. World Wrestling Federation (WWF)
• The World Wildlife Fund was founded in 1961 and had an agreement with the now-
infamous wresting entertainment company
• The WWE was re-branded in 2002 because it breached its agreement
Why Companies Change Names
3 Current Name Outdated or Out of Scope
o DELTA Airlines started as a dust-cropping company in the 1920s
• The company was called Huff Daland Dusters
o GOOGLE, one of the world’s best known and largest valued brands, was
originally called BackRub
• From a trademark perspective, it was a pretty good name, too, since the search engine
referred to all the backlinks
• Of course, GOOGLE is a play on “googol” which means 10100
• Legend has it that the word was misspelled
Why Companies Change Names
4 Geographic Expansion
o One of the best examples of this is the birth of
Panera Bread
o Do you remember The St. Louis Bread Company?
o As Panera was preparing for expansion, it needed a name that better reflected
the fact that it was no longer only based in St. Louis
• The new name could have also been due to the fact that Au Bon Pain purchased the chain
in 1992, but didn’t rebrand it to Panera until 1997
o Contrast that with California Pizza Kitchen, which stayed true to its name even
once it expanded outside of California
Why Companies Change Names
5 Business Spin-off
o DuPont spins off CORTEVA AgriScience in June 2019
o VF Corporation (Vanity Fair) spins off KONTOOR Brands in May 2019
• KONTOOR owns WRANGLER, LEE, among other clothing brands
o Honeywell spins off RESIDEO Technologies in October 2018
• Smart home products and technologiesWhy Companies Change Names
6 Cultural/Translation Issues
o When adopting marks globally, it’s critical to consider the local meaning
• IKEA had a workbench they named FARTFULL, which didn’t do well with the
American audience
• In Swedish, the word Fährt means to travel in a vehicle with wheels
• In China, Kentucky Fried Chicken’s slogan, “Finger Lickin’ Good” translated
literally to “Eat Your Fingers Off” ( Not very appetizing )
• Recently, a Canadian brewery unwittingly apologized for naming its beer
HURUHURU, which in Maori means “pubic hair”
• The Maori are an aboriginal people of New Zealand
• The company publicly announced they would rebrandWhy Companies Change Names
7 Negative Impression
o ISIS Mobile Wallet
• In 2014, this platform backed by AT&T, T-Mobile, and Verizon
rebranded to Softcard due to the negative connotations with the
terrorist group
o The Washington Redskins
o Cleveland Indians
o Lady Antebellum
o Uncle Ben’s
o Eskimo Pie
o Land O Lakes
o Aunt Jemima
o Mrs. Butterworth’sIP/Trademark Factors
into BrandingIP/Trademark Counsel’s Role
Many companies will work If your client is not
with a branding or naming working with a branding
company agency
Trademark Counsel should be You must insert yourself
involved early to run searches into the processIP/Trademark Counsel’s Role
SEARCHING IS CRITICAL
Ask the client how they thought up the name
• Does it mean anything to them?
Where do they intend to sell the goods/services, now and in the
next 3-5 years?
• If there are global expansion plans, do NOT make any public
announcements about the name until the mark is filed in the
U.S. and each of those countries
• Work with local counsel and/or linguistic experts to make sure
the name translates well everywhereBrands Changing Due to Social/Racial Justice Reforms
Cleveland Indians: Rebrand
o On Dec 14, the Cleveland Indians
announced it was dropping the Indians name
o It had previously retired the Chief Wahoo
logo in 2019
o The club announced it will keep the name
through the 2021 season
o So far, there are no speculators who have
filed
o The club owns registrations for CLEVELAND
BLUES and CLEVELAND NAPS, both for
clothing and historical nodsThe “Lady A” Fight
o In the wake of George Floyd’s death, Lady
Antebellum decided to shorten its name to
LADY A and rely on its 3 prior trademark
registrations filed in 2010
o The problem? There is a 61-year-old blues
singer who has been using the LADY A moniker
at common law for nearly 30 years
o Lady A(ntebellum) could have easily discovered
Anita White aka Lady A had they conducted a
proper search
o The parties tried to reach a settlement, but
discussions broke downThe “Lady A” Fight
o Lady A(ntebellum) filed a declaratory judgment
action in early July.
o The original Lady A filed a countersuit for
trademark infringement on September 15
o The parties are arguing over where the case
will be heard – with the Dec action scheduled to
be heard in TN and the countersuit scheduled
to be heard in Seattle
o This likely won’t reach a full resolution (short of
settlement) until 2022
o For an interesting article on the topic see hereMars: Uncle Ben’s Brand Identity
Mars: Uncle Ben’s Brand Identity
o On June 17, Mars announced it would
review the Uncle Ben’s “visual brand identity”
o On Sept 23, Mars unveiled its new brand
BEN’S ORIGINAL
• We will change our name to Ben’s Original™, as
well as remove the image on our packaging to
create more inclusive branding. This change
signals our ambition to create a more inclusive
future while maintaining our commitment to
producing the world’s best rice.
o Regardless, Retrobrands, LLC filed UNCLE
BEN’S as an ITU application for “instant rice”
on August 12Nestle: Eskimo Pie
o On June 19, the Dreyer’s division of Nestle
announced the name change and new
packaging
o In comparison to Ben’s Original, how did
they do?
o Do you think they captured the essence of
the brand?
o In the days following this unveiling, Leo
Stoller and Retrobrands filed new
applications for ESKIMO PIE for ice cream
and t-shirtsQuaker: Aunt Jemima
o On June 17, Quaker announced the brand
will get a new name and image
o The image has changed over time to remove
the “mammy” kerchief imagery
o On February 9, Quaker announced PEARL
MILLING COMPANY as an homage to the
milling company in MN that gave birth to self-
rising pancakes
o AUNT JEMIMA products will be available in-
store thru June
o Three speculators all filed for AUNT JEMIMA
back in June for various breakfast foods
including RETROBRANDSLand O Lakes: New Packaging
Land O Lakes removed the Native
American woman from their package
In advance of their 100th anniversaryConAgra: Mrs.Butterworth’s
o On June 18, ConAgra announced it began a
complete packaging and brand review
o According to ConAgra, the imagery of the
brand is to “evoke a loving grandmother”
o No indication that the name will change, but
the bottle shape is iconic and a registered
trademark in use since 1966
o No further announcements on its websiteB&G Foods: Cream of Wheat
o Also, on June 18, B&G announced that its
packaging is under review
o B&G is looking at the black chef image
o CREAM OF WHEAT has been registered
since the 1920s
o No new announcements on its websiteRebranding Considerations in LatAm
ñ
Mr. Muscle and Mr. Clean
o SC Johnson & Sons owns the brand Mr.
Muscle, a household cleaning product
o In LatAm, the brand is known as “Mr.
Musculo” because it sounds more
familiar to Spanish speakers
o P&G owns Mr. Clean, another well-known
household cleaning product
o In LatAm, the brand is known as “Don
Limpio” which is more familiar in the
regionOdebrecht Changes to Novonor
o In December 2020, Odebrecht announced a
name change to Novonor amid scandal
o Brazilian engineering conglomerate operates
throughout LatAm
o The Operation Car Wash investigation was
launched in 2014 to uncover a network of
bribes paid out by large construction
companies to politicians to obtain lucrative
contracts with Brazilian state oil company
Petrobras
o Odebrecht was at the center of the scandal
and admitted to paying bribesP&G: Spic & Span
o On June 18, 2020, P&G announced they would
review the brand name and the product mascot
o It’s an 87-year-old brand
o Brand rooted in racial bias and hatred of Latinx
people
o Ordered expedited recall of packaging with
“Senior Sleepy” on the package
o P&G hopes to roll out new packages by year endNestle: Beso de Negra & Chicos
o On June 2020, Nestle announced it would
rebrand 3 Australian confections, two of
which have implications for the LatinX
market
o Chicos was rebranded to CHEEKIES and
Nestle announced the new packaging would
be available in early 2021
o Nestle is also in the process of renaming
Beso de Negra marshmallow confections
which are sold in Colombia
o No word yet on the new name or details
on when the new packaging will be
availableWhat Happens When
Brands Evolve?
• Trademark registrations can be kept alive
• When a logo or stylization is modernized, the older mark can
usually be used somewhere, like on the back of the package or
Brands
on a marketing piece
naturally evolve
• With some brands, it may not be possible (AUNT JEMIMA may
and change
need to be retired, or ODEBRECHT due to scandal)
over time
• The conversation must be driven by the business
• Legal/IP Counsel should be involved to protect the assets
whenever possibleIn Summary
In Summary
There are many reasons companies rebrand
It’s important to have a plan
If you sense your client is in a situation that will involve a rebrand,
get involved
SEARCH, SEARCH, SEARCH
Consider translation issues and foreign expansion plans
Be strategic with the implementation and announcementTrademarkabilities is a trademark academy for U.S. lawyers, paralegals, and 3Ls
We provide turnkey, comprehensive training on the entire USPTO trademark application process to help
attorneys become confident, effective practitioners.
For our colleagues who practice outside of the U.S., we offer a 3-hour course for non-U.S. attorneys who
are counseling clients on securing registrations in the U.S. and want to learn more about the U.S. process:
How the U.S. trademark system works
Possible filing bases for foreign applications
How to handle office actions
An overview of TTAB actions
Renewal & maintenance best practices
Working effectively with U.S. counsel, and much more!
To learn more, please visit our website or contact meQuestions?
Contact Info
Stacey C. Kalamaras, Esq.
Email: sck@klolegal.com
Tel: 708-320-2033
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Thank You!
ADVISING YOUR BUSINESS IS OUR TRADEMARK®
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